Tuesday, October 29, 2013

It took only seven pages for the Board to explain its decision affirming a Section 2(d) refusal of STORM CANDLE for candles [CANDLE disclaimed], in view of the registered mark STORM WATCH for "candles and and fragrant wax for use in potpourri burners." Would you have appealed? In re Royal Wine Corporation, Serial No. 85775626 (October 16, 2013) [not precedential].

Applicant argued that the nature of the involved goods is "irrelevant," as are all the other duPont factors (except one), because the marks are so different. The Board, however, pointed out that because the goods are in part identical (candles), that factor weighed heavily against applicant.

As to the marks, because CANDLE is disclaimed in applicant's mark, "it contributes less to its overall commercial impression and virtually nothing to its source-indicating function." Applicant did not dispute that STORM is the dominant portion of its mark, but argued that Examining Attorney Dezmona J. Mizelle-Howard improperly dissected the cited mark.

The Board pointed out that there is nothing wrong in according the word STORM greater significance in the overall impression created by the cited mark, but it agreed with applicant that STORM WATCH may be perceived by consumers as a unitary phrase. Nonetheless, that does not mean that the two marks are not similar in meaning or that they create different commercial impressions.

Instead, we find the marks similar in appearance and pronunciation due to the presence of the word “STORM” in both marks, and similar in their connotations and overall commercial impressions because, as applied to the involved goods, both marks bring to mind the idea of candles that illuminate the dark during a stormy weather condition, such as a storm watch, storm warning, or actual storm. In overall commercial impression, the marks evoke the same mental image.

Because the goods are identical and there are no limitations as to channels of trade in either the application or cited registration, the Board must presume that the goods travel through the same trade channels to the same classes of consumers.

Therefore, the Board found confusion likely and it affirmed the refusal.

The opinion suggests that STORM or variations or formative marks thereof is off limits for candles or related goods (presumably scents or lighting instruments). There goes my ideal for an X-men Storm character shaped candle business.